Case 6:12-cv-00799-JRG Document 269-1 Filed 01/26/15 Page 1 of 5 PageID #: 9514
`Case 6:l2—c:v—OO799—JRG Document 269-1 Filed 01/26/15 Page 1 of 5 Page|D #: 9514
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`EXHIBIT 1
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`EXHIBIT 1
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`

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`Case 6:12-cv-00799-JRG Document 269-1 Filed 01/26/15 Page 2 of 5 PageID #: 9515
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`FOLEY & L ARDN ER LLP
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`January 26, 2015
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`The Honorable Rodney Gilstrap
`United States District Court for the Eastern District of Texas
`100 East Houston Street
`Marshall, TX 75670
`
`ATTORNEYS AT LAW
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`Re:
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-JRG
`
`Dear Judge Gilstrap:
`
`On October 6, 2014, Plaintiff Invensys submitted the Expert Report on Infringement by
`Professor Jeffrey J. Rodriguez (“Rodriguez Report”). That report contains theories that Invensys
`never disclosed in its P.R. 3-1 Infringement Contentions. Defendants Emerson and Micro Motion
`(jointly, “Micro Motion”) request permission to file a motion to strike, inter alia, the paragraphs
`from the Rodriguez Report that contain such undisclosed theories. Not only does Invensys’s conduct
`violate this Court’s Local Patent Rules, but it also contradicts Invensys’s position taken earlier in this
`case with respect to disclosure.
`
`I.
`
`INVENSYS PREVIOUSLY ARGUED, WITH SUCCESS, THAT INFORMATION
`NOT TIMELY DISCLOSED IN CONTENTIONS COULD NOT BE USED AT TRIAL
`On June 10, 2014, Micro Motion moved for leave to amend its invalidity contentions within
`days after discovering the existence of documents containing information that it sought to add to its
`invalidity contentions. (Dkt. No. 163 at 3-7.) Invensys objected that Micro Motion’s disclosure was
`untimely, (see Dkt. No. 169), and Judge Davis eventually denied Micro Motion’s request to amend
`its contentions to add that new information. (Dkt. No. 248.) In stark contrast, Invensys now submits
`an expert report that contains dozens of arguments based on source code and other documents that
`were produced to Invensys a full year before the Rodriguez Report was due, and Invensys never
`sought leave to serve amended infringement contentions to put Micro Motion on notice of these
`arguments.
`
`II.
`
`INVENSYS NOW SEEKS TO USE AT TRIAL INFRINGEMENT THEORIES THAT
`WERE NEVER CONTAINED IN ITS INFRINGEMENT CONTENTIONS
`On July 17, 2013, Invensys submitted its P.R. 3-1 Infringement Contentions asserting
`infringement of 106 claims from the seven patents-in-suit. For all but one of the twenty-three
`independent claims and many other dependent claims, Invensys’s contentions include, exclusively in
`some cases, the boilerplate statement:
`
`The specific software or source code comprising this functionality in the Accused
`Instrumentality is proprietary to Micro Motion/Emerson and not publicly available.
`These infringement contentions will be supplemented as necessary in accordance with
`Eastern District of Texas local practice.
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
`
`SAN DIEGO
`SAN DIEGO/DEL MAR
`SAN FRANCISCO
`SHANGHAI
`
`SILICON VALLEY
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`4838-3600-2849.
`
`

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`Case 6:12-cv-00799-JRG Document 269-1 Filed 01/26/15 Page 3 of 5 PageID #: 9516
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`FOLEY & L ARDN ER LLP
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`January 26, 2015
`Page 2
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`Despite Micro Motion’s timely source code production of all relevant source code on
`September 13, 2013, and timely production of technical documents no later than October 2013,
`Invensys never supplemented its Infringement Contentions. On October 6, 2014, Invensys served the
`Rodriguez Report containing numerous infringement theories not previously disclosed.
`
`Specifically, as a first example, certain paragraphs of the Rodriguez Report contain theories
`that differ significantly from those disclosed in Invensys’s Infringement Contentions, including:
`
`
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`
`
`¶¶ 764-787, addressing claim 16 of the ’646 Patent (“determining an apparent flow rate of
`the flowing liquid during the transition from the second state to the first state, and correcting
`the apparent flow rate to obtain the flow rate of the flowing liquid during the transition from
`the second state to the first state”);
`¶¶ 179-190, addressing claim 24 of the ’136 Patent (“determining an initial mass flow rate,
`determining an apparent density of material … comparing the apparent density to a known
`density … and adjusting the initial mass flow rate based on the density difference to produce
`an adjusted flow rate”);
`¶¶ 365-373, addressing claims 3 and 4 of the ’594 Patent (“wherein the control and
`measurement system combines the sensor signal to produce a combined signal and to
`generate the drive signal based on the combined signal” and “generates the drive signal by
`applying a gain to the combined signal”); and
`¶¶ 558-564, addressing claim 24 of ’062 Patent (“apply a negative gain”), disclose entirely
`different theories than previously disclosed by Invensys.
`In each of these passages, Professor Rodriguez relies on source code and documents Invensys has
`long had in its possession, although none of these were discussed in Invensys’s Infringement
`Contentions.
`
`
`
`
`
`As a second example, ¶¶ 525-534, addressing claims 12 and 13 of the ’062 Patent and
`¶¶ 565-581, addressing claim 36 of the ’062 Patent, illustrate an even more egregious violation of
`the Local Patent Rules because Invensys’s corresponding Infringement Contentions consisted of
`nothing more than the boilerplate statement quoted above.
`
`III.
`
`THEORIES DISCLOSED FOR THE FIRST TIME IN THE RODRIGUEZ REPORT
`SHOULD BE STRICKEN
`Invensys had the Micro Motion documents and source code necessary to disclose its
`infringement theories a year prior to serving the Rodriguez Report. Invensys’s infringement theories
`could have and should have been disclosed during fact discovery. See, e.g., Global Sessions LP v.
`Travelocity.com LP, No. 6:10-cv-671-LED-JDL, 2012 U.S. Dist. LEXIS 73153, at *20-21 (E.D.
`Tex. May 25, 2012) (Plaintiff cannot amend infringement contentions to add allegations based on
`information it has long had.); Am. Video Graphics, L.P. v. Elec. Arts, Inc., 359 F. Supp. 2d 558, 560-
`61 (E.D. Tex. 2005) (Plaintiff must supplement infringement contentions within 30 days of source
`
`

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`Case 6:12-cv-00799-JRG Document 269-1 Filed 01/26/15 Page 4 of 5 PageID #: 9517
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`FOLEY & L ARDN ER LLP
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`January 26, 2015
`Page 3
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`code production.); Linex Techs. Inc. v. Belkin Int’l, Inc., 628 F. Supp. 2d 703, 711 (E.D. Tex. 2008)
`(P.R. 3-1 requires plaintiff to update its contentions.). Invensys failed to meet its obligations under
`the Local Patent Rules, and the relevant paragraphs of the Rodriguez Report should be stricken.
`
`IV. MICRO MOTION WILL BE PREJUDICED WITHOUT THE COURT’S
`INTERVENTION
`Invensys’s failure to comply with the Local Patent Rules and supplement its Infringement
`Contentions to disclose the infringement theories adopted by Professor Rodriguez “hampered [Micro
`Motion’s] ability to prepare [its] defense[.]” Am. Video Graphics, 359 F. Supp. 2d at 560. Because
`it lacked knowledge of these contentions, Micro Motion was unable to question Invensys’s witnesses
`about them. Micro Motion’s proposed motion will specifically demonstrate that because of
`Invensys’s failure, Micro Motion was not given the fair opportunity to prepare its invalidity case to
`prove that any of the techniques identified in ¶¶ 764-787 and ¶¶ 179-190 (e.g., “flow calibration
`factor,” and “temperature compensation”) and ¶¶ 558-564 (PI control loop) were well-known in the
`prior art. Likewise, Micro Motion had no way to anticipate any infringement theory as to claims 12,
`13, and 36 of the ’062 Patent because Invensys’s Infringement Contentions were wholly deficient.
`
`V.
`
`PROFESSOR RODRIGUEZ SHOULD NOT BE PERMITTED TO OPINE ON
`INDIRECT INFRINGEMENT OR CONVOYED, COLLATERAL, OR DERIVATIVE
`SALES, OR WHETHER INVENSYS’S PRODUCTS PRACTICE THE CLAIMS
`On pages 752-786 of his report, Professor Rodriguez opines on Micro Motion’s alleged
`knowledge of the asserted patents and on other issues relating to indirect infringement, but he brings
`no specialized expertise on these issues. In fact, his testimony adds nothing that is not readily
`apparent from the faces of the documents which he cites. Moreover, Professor Rodriguez has not
`offered any credentials that would qualify him to testify about the issues of, for example, willful
`blindness and non-infringing uses. Alleged expert testimony “will not help the trier of fact when it
`offers nothing more than what lawyers for the parties can argue in closing arguments.” United States
`v. Frazier, 387 F.3d 1244, 1262-63 (11th Cir. 2004).
`
`The same lack of expertise applies to Professor Rodriguez’s opinions on pages 786-788
`regarding convoyed sales. In a single sentence, Professor Rodriguez opines that “the infringing
`features almost certainly drive customer demand for the entire Accused Flowmeter because they
`would not operate without the infringing components or methods.”1 Such conclusory testimony fails
`to meet the requirements of Daubert and Rule 702, and Professor Rodriguez has not offered any
`credentials that would remotely qualify him to testify about consumer demand.
`
`For at least these reasons, Micro Motion respectfully requests permission to file a Daubert
`motion to exclude the testimony and strike the identified opinions of Professor Jeffery J. Rodriguez.
`
`
`1 Similarly, Professor Rodriguez opines in a single sentence in ¶ 985 that the Invensys Products practice the asserted
`claims.
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`

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`Case 6:12-cv-00799-JRG Document 269-1 Filed 01/26/15 Page 5 of 5 PageID #: 9518
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`FOLEY & L ARDN ER LLP
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`January 26, 2015
`Page 4
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`cc: all counsel of record (by ECF)
`
`Sincerely,
`/s/ Jeffrey N. Costakos